Appeal No. 1997-3797 Page 5 Application No. 08/121,820 In reaching our decision in this appeal, we have given careful consideration to the appellants' specification and claims, to the applied prior art references, and to the respective positions articulated by the appellants and the examiner. Upon evaluation of all the evidence before us, it is our conclusion that the evidence adduced by the examiner is insufficient to establish a case of obviousness with respect to the claims under appeal. Accordingly, we will not sustain the examiner's rejection of claims 25 to 41 under 35 U.S.C. § 103. Our reasoning for this determination follows. The appellants argue that the applied prior art does not suggest the claimed subject matter. We agree. Obviousness is tested by "what the combined teachings of the references would have suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). But it "cannot be established by combining the teachings of the prior art to produce the claimed invention, absent some teaching or suggestion supporting the combination." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732Page: Previous 1 2 3 4 5 6 7 8 9 10 11 NextLast modified: November 3, 2007